Castrol Limited vs Union of India (UOI) and Another

S. Muralidhar, J.—The Petitioner challenges an order dated 30th September 2009 of the Deputy Registrar of Copyrights ("DROC") by which the applications filed by the Petitioner for two artistic works in respect of CASTROL logo under the Copyright Act, 1957 ("CA") under Diary Nos. 2484 and 2485 of 2005 were "recorded" with liberty to the Petitioner to submit fresh applications.

The Petitioner, a company incorporated under the laws of England, states that it is in the business of manufacturing, processing and marketing high grade lubricating oil products in the United Kingdom and other countries. The aforementioned two applications were filed by it on 2nd August 2004 in accordance with the requirements of Section 45, CA. They were examined by the DROC and an examination report dated 15th February 2005 was sent to the counsel for the Petitioner with the following objections:

(i) That the firm itself cannot be the author of the work and details of the author were to be furnished.

(ii) That the "No Objection Certificate" in original from the author should be submitted.

(iii) That the "Power of Attorney" duly accepted by the Attorney/signed by the Applicant should be submitted.

By a letter dated 18th February 2005 the Petitioner furnished details of the person who actually created the artistic work in respect of each of the two applications, a notarized copy of the No Objection Certificate ("NOC") from the original author engaged by the Petitioner and the Power of Attorney ("POA") in original. On 9th April 2005 another letter was sent by counsel for the Petitioner to the Registrar of Copyrights ("ROC") enclosing a Form IV duly signed by the authorized person along with the POA in original. On 11th/14th July 2008 a letter was received by counsel for the Petitioner from the DROC mentioning the discrepancies and asking the Petitioner to furnish the following documents:

(a) Kindly furnish No Objection Certificate (s) in original from the Author(s) viz., J.E. Mostyn and Nigel Chisholm, clearly indicating that he/she has no objection if the copyright in the work(s) is registered in the name of the Applicant (M/s. Castrol Limited).

(b) The Power of Attorney (POA) has not been submitted on stamp paper. Please submit POA in original on stamp paper, duly accepted by the attorney and signed by the applicant.

In reply the counsel for the Petitioner sent a letter dated 14th October 2008 submitting documents, i.e., NOC in original as well as the duly stamped POA. It is stated that the Petitioner again received a letter from the DROC on 25th February 2009/3rd March 2009 reiterating the same discrepancies. On 21st May 2009 the Petitioner requested for time till 28th June 2009 to file the said documents. Another letter was written by the counsel for the Petitioner to the DROC on 22nd June 2009 seeking extension of time for submitting the documents till 28th July 2009. The DROC sent a letter dated 7th August 2009 granting a final extension of three weeks'' time to file the requisite documents on or before 18th August 2009. By a letter dated 17th August 2009 the Petitioner sought further extension of time till 18th September 2009 for submitting the documents. However, the impugned order was passed on 30th September 2009 stating as under:

I am directed to refer to this office letter of even No. dated 7th August 2009 and your correspondence dated 17th August 2009 on the subject cited above and to say that you have not submitted the requisite documents, even after the final extension. You were asked to submit the requisite documents on 11th July 2008 itself and have been given ample time and extension from 3rd March 2009 onwards. Despite several extension, you have failed to submit the documents and are seeking extension after extension on some ground or other.

Since you have not removed the discrepancies pointed out by the office so far, your applications have been recorded. No further communication in the matter will be entertained hereafter. However, you shall have the liberty to submit the application(s) afresh, duly completed in all respect if you ever so desire.

Ms. Jyoti Singh, learned Senior counsel appearing for the Petitioner placed reliance on the judgments of this Court in Ferid Allani Vs. Uninon of India (UOI) and Others, Telefonaktiebolaget LM Ericsson (Publ) v. Union of India, 168 (2010) DLT 461 and the decision dated 24th November 2009 of the learned Single Judge of this Court in W.P. (C) No. 8977 of 2008 (Maa Kamakhya Darbar Fragrances India v. Shanti Dhoop Karyala) and submitted that the Petitioner''s applications could not be deemed to have been abandoned and without affording the Petitioner an opportunity of being heard the applications could not have been recorded. Secondly, Ms. Singh submitted that the requirement of an NOC from authors was already satisfied since the certified copies of the deeds of assignment whereby the copyright in the artistic works were assigned by the authors in favour of the Petitioner had already been furnished to the DROC by the Petitioner. Ms. Singh referred to a letter dated 9th April 2005 whereby full particulars were furnished to the Respondent despite which the same information was repeatedly asked for by the DROC. She submitted that the specimen form of NOC enclosed with the letter dated 11th July 2008 of the DROC was not a statutory form in terms of the CA and Copyright Rules ("CR"). Further, the POA had been submitted as required by the Respondents.

None appeared for the Respondents despite one pass over. Accordingly, this Court has examined the counter affidavit filed on behalf of Respondents. The counter affidavit raises a preliminary objection to the maintainability of this petition on the ground that the impugned order of the DROC is appealable before the Copyright Board u/s 72(1), CA. It is then submitted that the Petitioner did not remove the deficiencies pointed out in the various communications of the DROC and therefore, the applications were rightly recorded. However, liberty to file fresh applications was granted. Since the applications were not decided on merits it was open to the Petitioner to submit a complete application before the DROC for registration of the above copyright in respect of the CASTROL logo.

The above submissions have been considered. The impugned order has obviously been passed without affording the Petitioner an opportunity of being heard. From the narration of facts in the petition it appears that the Petitioner replied to the letters of the DROC pointing out deficiencies in the applications. The deficiencies initially pointed out were that the Petitioner had to furnish an NOC from the author(s) and submit the POA in original on a stamped paper. The letter dated 9th April 2005 from the counsel for the Petitioner to the ROC enclosed the POA in original. The certified copies of the deed of assignment dated 14th May 2001 in respect of the artistic works for which registration was sought has also been placed on record. The Petitioner''s case throughout was that once the author of the artistic work, who was engaged by the Petitioner, has assigned the copyright in such work in the name of the Petitioner then it was the Petitioner which owned the copyright in the work. According to the Petitioner, the question of the author of the work giving a NOC for the registration of the copyright in such work in favour of the Petitioner did not arise. Significantly, the impugned order does not refer to the above contention advanced by the Petitioner in several communications addressed by its counsel to the DROC. It does not refer to the fact that the Petitioner had submitted the POA and the deed of assignment. In the circumstances, the DROC ought to have given the Petitioner an opportunity of being heard before deciding to simply close the application as "recorded".

The ratio of the decisions in Ferid Allani v. Union of India and Telefonaktielbolaget LM Ericssion (Publ) v. Union of India although rendered in the context of abandonment of an application under the Patents Act, would equally apply to the facts and circumstances of the present applications under the CA. With the Petitioner having responded to all the letters written to it by the DROC it cannot be said that the Petitioner failed to pursue its applications for registration of copyright in the two artistic works. In any event considering that the "recording of the applications would be depriving the Petitioner of a valuable right of registration, such decision ought to have been taken only after affording the Petitioner an opportunity of being heard. Further, since one of the grounds on which the Petitioner has assailed the impugned order is that it is violative of principles of natural justice, this Court is not precluded from entertaining the present writ petition under Article 226 of the Constitution notwithstanding that there is a statutory remedy by way of an appeal before the Copyright Board.

Consequently, the impugned order dated 30th September 2009 passed by the DROC is hereby set aside. The Petitioner''s applications are restored to the file of the DROC. The DROC will now give the Petitioner an opportunity of being heard and then decide the two applications in accordance with law. The applications be placed before the DROC for this purpose on 28th April 2011. It will be open to the Petitioner to place before the DROC by that date further documents in support of its applications and to satisfy the DROC that it has removed the deficiencies pointed out by the DROC. The Petitioner will not seek any further adjournment in the matter before the DROC. The decision of the DROC on the two applications will be communicated to the Petitioner within a period of four weeks thereafter. If" the Petitioner is still aggrieved by the said decision, it will be open to the Petitioner to seek appropriate remedies as may be available to it in accordance with law.

The writ petition and the pending application are disposed of in the above terms. Order dasti.